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Archive for: Art. 161 IPL

Trade mark law, case II GSK 883/11

September 3rd, 2012, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 827/10“. INTER GLOBAL decided to file a cassation complaint against the judgment of the Voivodeship Administrative Court of 29 October 2010 case file VI SA/Wa 828/10 that upheld the decisions of the Polish Patent Office of 16 October 2009 case no. Sp. 449/05, in which the PPO invalidated the registration of the word-figurative trade mark TEMPO R-104245 because it was applied for in bad faith.

R-154752

The Supreme Administrative Court in its judgment of 9 May 2012 case file II GSK 883/11 dismissed the appeal. The Court noted that there was some sense in INTER GLOBAL’s legal arguments that there is a need to provide legal certainty in a situation where the disloyal agent used the trade mark of a foreign entrepreneur who was conscious of this fact, even if the trade mark was applied for registration in bad faith. However, the Court held that the protection of property rights against actions taken in bad faith is so extended that it will undoubtedly take precedence over considerations on legal certainty resulting from the long-term use of the mark. This rule will not be changed by the argument that the disloyal agent promoted the foreign trade mark and incurred significant expenses. The Polish legislator adopted the ban on registration of signs that were applied in bad faith as one of the main principles of industrial property law, so there is not any possibility of legalization of any unethical actions, even qualified, because characterized by bad faith of professional entities that are involved in business activities. Because of the legal certainty of market turnover, a foreign rightful owner of a trade mark used by another entity, will not be able to demand the invalidation of or to oppose the use of a later trade mark, in a situation in which the use of the later sign has been knowingly tolerated for a limited time, at least of 5 consecutive years, unless the application for registration of the later mark was made in bad faith. At the same time it should be noted that the registration of a trade mark that belongs to foreign trade partner by his disloyal agent without the consent is not always deemed as an act of bad faith. Although the cases in which an agent acting without the authorization of the proprietor will not be acting in bad faith are veru limited, however, such situations may occur. The court also said that the acceptance of INTER GLOBAL’s argument would lead to a situation of unequal treatment of foreign entrepreneurs compared to those operating in Poland. If, as the Polish Industrial Property Law rules only apply to relationships between a Polish agent and foreign entrepreneur, it would allow for an unlimited in time option of invalidation of the registered trade mark that was applied in bad faith (that option lapse after 5 years of the use of such mark, with the knowledge of a foreign entrepreneur), in the situation of the agent and a company operating in Poland. The company operating in Poland and being in the agency relationship with another entrepreneur (agent) could, therefore request for the invalidation of the signs registered by the latter in bad faith at any time. The foreign entrepreneur represented by a Polish disloyal agent would be deprived of such a right.

Trade mark law, case VI SA/Wa 827/10

January 31st, 2011, Tomasz Rychlicki

Czech entrepreneur Druchema Drużstvo pro Chemickou Vyrobu a Sluzby requested the Polish Patent Office for the invalidation of the right of protection for TEMPO R-104245 and TEMPO R-154752 trade marks registered for goods in Classes 02 and 03 such as wax paste for maintenance and renovation of car lacquer. Both trade marks are owned by INTER GLOBAL Sp. z o.o. Druchema argued that it owns TEMPO trade mark that was registered in the Czech Republic and INTER GLOBAL was for many years its sales representative in Poland and in this period the representative applied for on its own behalf and obtained trademark protection for TEMPO signs in Poland. The Polish and Czech company entered into an exclusive sales agreement, however, its provision did not include the powers to register TEMPO trade marks. INTER GLOBAL argued that it created and registered different trade marks. The PPO invalidated the rights of protection in its decisions of 5 October 2009 case files Sp. 448/05 and Sp. 449/05 . INTER GLOBAL filed a complaint against both decisions.

R-154752

The Voivodeship Administrative Court in Warsaw in its judgment of 29 October 2010 case file VI SA/Wa 827/10 dismissed the complaint and ruled that it was not necessary for the recognition of bad faith of the applicant for the right of protection for a trade mark, that the the contracting party has used a trade mark identical to a sign of its business partner during their commercial cooperation. It was sufficient that during the commercial cooperation the contracting party has used a trade mark that was very similar to the trademark invalidated.

R-104245

The Voivodeship Administrative Court in Warsaw in its judgment of 29 October 2010 case file VI SA/Wa 828/10 also dismissed the complaint and ruled that many years of cooperation between Polish and Czech entrepreneurs led to the fact that INTER GLOBAL had clear information about Druchema, and how it designates its products. For these reasons, by applying for the protection for the mark in question that was very similar to a trade mark used by Druchema and doing it without its consent and knowledge, INTER GLOBAL was clearly acting in bad faith. Both judgments are not final yet.

Trade mark law, case II GSK 779/09

December 1st, 2010, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 121/09“. HOUSE Spółka z o.o filed a cassation complaint. The Supreme Administrative Court in its judgment of 23 September 2010 case file II GSK 779/09 dismissed the case. The Court agreed with the VAC that ICT had the status of “owner” of the trade mark within the meaning of Article 161 of the IPL in connection with Article 6 septies of the Paris Convention although ICT at the date of the application of the questioned trade mark, i.e. on 11 March 1994, was not entitled under Article 161 of the IPL to XL XAVIER LAURENT IR-763083 trade mark, since the registration has been granted on 23 September 1999, and the protection of international registration lasts until 10 July 2001.

IR-763083

The SAC ruled that the provisions of Article 8(1) of the TMA concerns the substantive conditions of registration of the mark (it is not allowed to register a sign, which is contrary to the law or the rules of social coexistence) and it was referred to in Article 29 of TMA as a basis for invalidation of the registration of the trade mark, if the conditions provided in Article 8(1) were met. However, Article 161(1) and (2) of the IPL concerns only a request (claim) for invalidation of the right of protection.

Article 161
1. To the extent as follows from an international agreement, where a trademark has been applied for protection by and on behalf of, or the right of protection has been granted for, an agent or a representative of the person enjoying the exclusive right to use that trademark in another country, that person may, if the agent or representative acted without that person’s consent, demand that the protection granting proceeding be discontinued or the right of protection revoked. He may also demand that the right of protection be granted on his behalf, or the right already granted transferred to him.
2. The right may not be demanded to be revoked or transferred, where the entitled person referred to in paragraph (1) has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use.

It was obvious for the Court that if the conditions mentioned in the Article 161(2) of the IPL were met, then there is no need to study the substantive grounds for invalidation of the registration, as referred to in Article 8(1) in connection with Article 29 of the TMA. It is in accordance with Article 161(2) of the IPL that the request for the invalidation or transfer of rights cannot occur if, for a period of five consecutive years, the holder referred to in paragraph 1, being aware of such use, did not object to the use of a registered trade mark.

Trade mark law, case II GSK 387/09

March 30th, 2010, Tomasz Rychlicki

Tianjin Cosmetics Scientific – Technical Research Institute Co., Ltd from China filed a request for invalidation of PULANNA R-76294 and PULANNA R-76424 trade marks. The company from China claimed that the person who applied for the protection of these two trade mark was acting as a Polish agent of Tianjin Cosmetics Scientific and he has concealed the fact of both trade mark applications and subsequent registrations.

The Supreme Administrative Court in a judgment of 17 February 2010 case file II GSK 387/09 ruled that to the extent as follows from an international agreement, where a trademark has been applied for protection by and on behalf of, or the right of protection has been granted for, an agent or a representative of the person enjoying the exclusive right to use that trademark in another country, that person may, if the agent or representative acted without that person’s consent, demand that the protection granting proceeding be discontinued or the right of protection revoked. He may also demand that the right of protection be granted on his behalf, or the right already granted transferred to him. The right may not be demanded to be revoked or transferred, where the entitled person has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use. Moreover, the facts of each case are examined on the date of trade mark application. See also “Trade mark law, case II GSK 950/08“.

Trade mark law, case VI SA/Wa 121/09

October 13th, 2009, Tomasz Rychlicki

On 9 October 1996, the Polish Patent Office registered the trade mark XAVIER LAURENT R-92393 for goods in class 3 such as personal deodorants. The trade mark is currenty owned by the Polish company HOUSE Spółka z o.o. from Zielona Góra. The International Trade Corporation Limited, the owner of XL XAVIER LAURENT IR-763083 trade mark filed a request for invalidation of the right of protection for XAVIER LAURENT R-92393 trade mark.

The ITC claimed it has been active in the cosmetics industry fo the long time and the most popular goods are these marked with the Xavier Laurent brand. The company had a national distributor of its products in Poland which on March 1994 applied to the Polish Patent Office for the trade mark registration of XAVIER LAURENT sign and later on it has assigned the right of protection for XAVIER LAURENT R-92393 to HOUSE. The ITC based its request on article 8(1) and (2) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with subsequent amendments.

A trade mark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence.
2) it infringes the personal or economic rights of third parties;

The request was also mentioning article 6septies of the Paris Convention for the Protection of Industrial Property. The Polish Patent Office dismissed ICT’s request and the company filed a complaint to the Voivodeship Administrative Court in Warsaw. On 5 May 2009, the VAC in a judgment case file VI SA/Wa 121/09, ruled that article 8(i) of the TMA must be interpreted broadly and concerns not only the form of trade mark, but also other subjective elements. The basis for invalidation may be, therefore, not only the characteristics of a trade mark itself, but also the reprehensible conduct of the applicant/owner. For the correctness of such interpretation of provisions of article 8(i) speaks the provisions of article 31 of the TMA that expressly provides for the invalidation of the registration rights acquired as a result of bad faith behaviour.

The VAC also held that article 161 of the IPL specifies the entity protected by this provision as “a person entitled to the exclusive use of the mark in a foreign country.” The protection provided for in article 161 may be used by any entity (entrepreneur) from abroad, which will demonstrate that at least in one Member state a specific trade mark is its “property”, especially it has the right of exclusive use that came from the relevant decision of public authorities (patent organ) in that country. The VAC anulled the Polish Patent Office’s decision from 2008 and decided that the decision was not subject to execution. The Judgment is not final yet.

Trade mark law, case II GSK 950/08

August 12th, 2009, Tomasz Rychlicki

On 2 September 1998, the Polish Patent Office has granted the right of protection for word-figurative trade mark SCOTCH & SODA R-100588 for the Polish company “SCOTCH & SODA” POLSKA Jadwiga i Piotr Szlegiel Spólka Jawna from Gorzów Wielkopolski for goods in class 25. On 2005, Scotch & Soda B.V. from Netherlands filed a request for invalidation of the right of protection for SCOTCH & SODA R-100588 trade mark based on article 8(i) and 8(ii) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No. 5, item 15, with later amendments:

A trade mark shall not be registrable if:
i) it is contrary to law or to the principles of social coexistence;
ii) it infringes the personal or economic rights of third parties

The request was also based on provisions of article 6septies of the Paris Convention for the Protection of Industrial Property. The S&S company argued that for over twenty years it exports clothing goods marked with the Scotch & Soda trade mark to many countries in the world through local distributors. One of them was a Polish businessman, who in 1994 became the sole importer and distributor of Scotch & Soda products in Poland. According to S&S his Polish partner has abused its trust by obtaining the trade mark protection for Scotch & Soda trade mark for himself and in this way blocking access to the Polish market for S&S. In 2002, the S&S company has signed with Piotr Szlegiel a document called “cession of rights from the registration of the mark.” However, at the date of the signature of this document, the right of protection for word-figurative trade mark SCOTCH & SODA R-100588 already belonged to “SCOTCH & SODA” POLSKA. In addition the S&S company received a financial request from the Polish entrepreneur.

“SCOTCH & SODA” POLSKA claimed that it was an equal partner, rather than the official importer and sole distributor of the S&S company’s goods and it was not bound by the agency or representative contracts. The legal predecessor of “SCOTCH & SODA” POLSKA had full autonomy inter alia, he was allowed to apply for the registration of the disputed mark on the territory of the Republic of Polish. This fact was known to S&S. Polish company has claimed that S&S failed to obtain the trade mark protection for SCOTCH & SODA sign based on the international registration under the Madrid Agreement and it did not take any action to change this situation. After the completion of courts’ proceedings the S&S company has offered “SCOTCH & SODA” POLSKA a royalty-free (free of charge) license to use the disputed trade mark for shoes throughout Europe in return for the transfer of the right of protection. These negotiations have not yielded results.

“SCOTCH & SODA” POLSKA was astonished by the fact that the S&S company “challenged” the right of protection for word-figurative trade mark SCOTCH & SODA R-100588 for the first time after it has received a cease and desist letter (a request for voluntary fulfilment of plaintiff’s demand is a prerequsite to file a complaint in a civil suit against trade mark infringer) on October 2003.

“SCOTCH & SODA” POLSKA requested the Polish Patent Office to dismiss a request for invalidation of the right of protection for SCOTCH & SODA R-100588. The Polish company called the circumstances with regard to litigation that ended in a judgment issued by the Regional Court in Zielona Gora (case act signature V GC 522/03). the Regional Court dmissed a suit brought by S&S company based on article 161 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo wlasnosci przemyslowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later amendments.

1. To the extent as follows from an international agreement, where a trademark has been applied for protection by and on behalf of, or the right of protection has been granted for, an agent or a representative of the person enjoying the exclusive right to use that trademark in another country, that person may, if the agent or representative acted without that person’s consent, demand that the protection granting proceeding be discontinued or the right of protection revoked. He may also demand that the right of protection be granted on his behalf, or the right already granted transferred to him.

2. The right may not be demanded to be revoked or transferred, where the entitled person referred to in paragraph (1) has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use.

However, the PPO did not agree with “SCOTCH & SODA” POLSKA arguments and it has invalidated of the right of protection for SCOTCH & SODA R-100588 trade mark in its decision of 2007. In the PPO’s assessment the legal predecessor of “SCOTCH & SODA” POLSKA has been acting in bad faith while applied for the protection rights to the disputed sign. According to the Polish case-law and doctrinal opinions that were cited by the PPO, the applicant for trade mark registration is acting in bad faith when he/she knows or should know that such action violates third parties’ rights. Acting in bad faith is also one who is relying on a right or legal relationship and knows that this right or a legal relationship does not exist, or he or she does not know, but the lack of knowledge can not be regarded as the justified circumstances. The PPO has also noted that in the legal commentaries on Polish trade mark law two competing views on bad faith are taken into account. First, bad faith occurs when a person who owns a disputed trade mark registration had to know or should know that the legal conditions to acquire this right were not met. In such case, the owner is always acting in bad faith when a mark has been registered contrary to the applicable provisions of the law or expressly recognized principle of social coexistence (see: article 8(i) of the TMA). By contrast, in the case of trade mark registration that was made despite the existence of an earlier priority right, an owner of such righ can be entitled as acting in good faith only if he or she was deceived (and it can be justified) with regard the extent of protection resulting from the trade mark right with an earlier priority. If the registration has been aquired by a person for a purpose other than to use a trade mark (for example, to force financial concessions from other entrepreneurs, to obtain control over imports, to force reaching of a license agreement) in this case, bad faith is understood as a qualified form of a breach of social coexistence rules. Such opinion was issued by R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 224. However, in turn, dr Elzbieta Wojcieszko-Gluszko thinks that there is no reason to modify the general concept of good and bad faith for the needs of the IPL regulations. According to dr Wojcieszko-Gluszko a valuable guidance for the interpretation with regard to bad/good faith may be a reference to the legal definition of a filing made in bad faith that is provided in the Benelux Trademark Law.

The PPO also cited arguments provided in the judgment of the Supreme Administrative Court of 6 August 2002, case file II SA 3879/01 and interpretation included in the judgment of 17 July 2003, case file II SA 1165/02 that was issued on the basis of article 8(i) of the TMA and in which the Court concluded that the issue of an assessment of the contradiction of a trade mark application with rules of social coexistence does not refer to trade mark only and itself, but also takes into account the contradiction with the principles of actions made by an applicant and their intended effect. In courts’ opinion the extending interpretation of the rules of social coexistence is justified if one notices that this general clause/rule has displaced such clauses and rules as the principles of good manners, fair trading and good faith. The PPO has considered as totally unfounded all arguments that the consent for a trade mark registration belonging to a partner was justified due to a lack of prohibition in the relevant articles of association, or in other agreements concluded between the parties. The concept of an agent or a representative in this case should be interpreted according to the Polish law. Selling products on the Polish market by the involved people was in such a role. “SCOTCH & SODA” POLSKA brought a complaint to the Voivodeship Administrative Court in Warsaw, which, in a jugment of 29 May 2008, case file VI Sa/Wa 402/08 dismissed the complaint. “SCOTCH & SODA” POLSKA brought a cassation complaint to the Supreme Administrative Court in Warsaw. The cassation complaint was dismissed in judgment of 2 July 2009, case file II GSK 950/08.

The SAC emphasized the fact that for the assessment of compliance of a registration of a mark with the principles of social coexistence (as referred to in article 8(i) of the TMA) the most authoritative is the moment of filing an application for trade mark registration of in the Patent Office, which in this case took place in March 1995. It could not be left imperceptible by the Courts that even “SCOTCH & SODA” POLSKA claimed that the disputed mark was not its property at the date of filing for registration in the Patent Office (sic!). Moreover, the legal predecessor of “SCOTCH & SODA” POLSKA did not inform S&S about his registration neither got a permission for such action. If it were otherwise, what is clear, the S&S company would not file for the recognition on the territory of the Republic of Poland of the protection for its international trademark.

As a distributor of the goods of an entrepreneur located abroad who was not leading any commercial activities in its own name on the Polish territory, the legal predecessor of “SCOTCH & SODA” POLSKA probably knew, or in any circumstance must have known that the application in its own name for registration of a trademark belonging to a foreign business violates provisions of article 6 septies of the Paris Convention. But not only. “SCOTCH & SODA” POLSKA predecessor’s behavior violated the rules of social coexistence, within the meaning of article 8(1) of the TMA. His actions in fact were directed at the appropriation of trade mark property rights owned by the S&S company, without obtaining any consent, in order to achieve unjustified benefits. Such behavior clearly violates the principles of social coexistence as it was decided by the Polish Patent Office and the Voivodeship Administrative Court in Warsaw.